Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-8 and 11-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,080,757. Although the claims at issue are not identical, they are not patentably distinct from each other because with respect to claims 1-2, 6-8, and 11-13, the claims of the instant application are broader than the claims of the ‘757 patent since they do not include limitations such as the substrate being a III-nitride substrate and therefore under a one way obviousness-type double patenting test, a prima facie case of obviousness.
Furthermore, concerning dependent claims 3-4, the claims of the ‘757 patent do not expressly disclose the particular dopant concentration and the III-nitride layer being GaN. With respect to the dopant concentration, Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Furthermore, official notice is taken that GaN is a well known III-nitride structure and would have been obvious to use as a III-nitride material.
With respect to dependent claim 5, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to determine through routine experimentation the optimum first III-nitride layer depending upon a variety of factors including the desired scaling factors of the device and such limitation would not lend patentability to the instant invention absent a showing of unexpected results.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,080,757 in view of Park et al., US 2001/0024860.
Claims 1-10 of the ‘757 patent are applied as above but do not expressly disclose where the gate dielectric comprises aluminum oxide. Park et al. discloses a MOSFET comprising an aluminum oxide gate dielectric (see abstract). In view of this disclosure, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the device depicted by claims 1-10 of the ‘757 patent so as to comprise an aluminum oxide gate dielectric because Park et al. discloses this to be a suitable gate dielectric for MOSFET configurations.
Claims 9 and 14-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,080,757 in view of Moslehi, U.S. Patent 5,168,072.
Claims 1-10 of the ‘757 patent are applied as above but do not expressly disclose the gate dielectric comprises silicon oxide and/or silicon nitride.Moslehi discloses a MOSFET that can include a gate dielectric of nitride or oxide or both nitride and oxide (see col. 11-lines 11-27). In view of this disclosure, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the device depicted by claims 1-10 of the ‘757 patent so as to comprise a nitride/oxide or combination nitride/oxide gate dielectric because Moslehi shows that gate dielectrics made of these materials are suitable for MOSFET configurations.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD A BOOTH whose telephone number is (571)272-1668. The examiner can normally be reached Monday to Friday, 8:30 to 5:00.
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/RICHARD A BOOTH/ Primary Examiner, Art Unit 2812
August 30, 2026
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